Intellectual Property (IP) 101:

What Faculty Should Know about Intellectual Property

Policies and Procedures at SFSU

What You Should Take Away from

This Presentation:--An general understanding of intellectual property

(IP) and the invention disclosure process at SF State

--The rights and obligations of SFSU faculty regarding invention disclosure

--The function of the Office of Research and Sponsored Programs (ORSP) in invention disclosure, IP protection, and technology licensing

What Is Intellectual Property?Standard Definition: Intellectual property

(commonly referred to as “IP”) is anything that is created by the intellect in a tangible form.Translation: An invention, such as a new and useful process, machine, manufactured item, composition of matter, and any new, useful

improvement of the above (which is disclosed on the invention disclosure form)

Some basics first…

Purpose of ProtectingIntellectual Property:

•By protecting your invention—and depending upon the form of protection used and the type of invention involved—you can exclude others from making it, growing it, propagating it, using it, selling it, offering to sell it, importing a protected product, or importing a product made using a protected process.

•By not protecting your IP, it may become part of the public domain, where anyone can use it, and it’ll be outside of your control.

Pros & Cons of Patenting

Risks of not patenting-Legitimate re-discovery-Reverse Engineering-Patenting may be forever barred if application is not filed

Cons – Exposure-Invention and research strategy exposed to the public

-Infringement is difficult to detect -Trade secret status destroyed

Protecting Your IP: Forms of U.S. Intellectual Property Protection

•Patents•Copyrights

•Plant variety protection (PVP)•Trademarks

•Trade secrets and Know-how

The Most Common Form of IP

Protection: The Patent• To be patented, an invention must be useful, novel,

non-obvious to one skilled in the art, and it must work.

• Patents are governed by federal law.• They are property ownership documents similar to

a lease on a car.• Patents give the owner the right to exclude others

from making, using, or selling the invention.• They are valid for 20 years from the first filing date

of the patent.• But, patents are expensive and involve a long-term

commitment and on-going maintenance payments.

Advantages of Disclosing,

Protecting, and Licensing SFSU IP• Extends SFSU’s research mission by fostering

investment in innovation, through licensing and start-up company development.

• Furthers SFSU's service mission by providing new products and services to society.

• Promotes economic development in the state of California and in the nation.

• Provides income to SFSU to further its research and scholarship activities.

• Improves SFSU's standing as a university, which tends to attract leading researchers and high quality students.

• Provides a financial incentive to faculty inventors.

Who Owns Faculty IP?

Official SFSU Policy: “Under SF State policy, title to inventions resulting from sponsored research from any source outside of SF State or its auxiliaries shall be held in full (100%) ownership of the University. ”

SFSU's Copyright Policy“Creators own their traditional academic copyrightable works (books, articles, dissertations, papers, study guides, syllabi, lecture materials, online course materials, tests or similar items, novels, poems, musical compositions, and other creative expressions).  SF State recognizes that faculty and students should benefit from the results of their work. 

a)     In all cases of course material development, SF State retains exclusive right to course number and description as listed in SF State catalogs.  The Creator(s) retains the rights to distribute the work and is not obligated to share any part of the revenue from the sale or licensing of the content with SF State or, except as provided otherwise in this policy or state or federal law, with any office or organization within SF State.  The Creator(s) has sole responsibility for the registration of material for which SF State has no proprietary interest.b)    Intellectual property developed by faculty as a “work for hire” and Fully Commissioned by SF State, or developed by a non-faculty employee within the scope of his or her employment and/or specifically ordered or commissioned for use by SF State, shall be owned solely by SF State, both in copyright and distribution.  SF State has responsibility for the registration of works for which it has exclusive ownership.”

Invention Disclosure Process/Faculty Requirements:

• Faculty, during their employment at SFSU, are required to disclose all potentially patentable inventions and discoveries (i.e., IP) to ORSP.

• The disclosure process starts when the faculty member completes an invention disclosure

form available on the ORSP website.

Confidentiality--Prior to disclosure of IP to ORSP: When a faculty

member needs to discuss a potentially patentable invention with a company prior to disclosure of the IP to ORSP, whether it’s prior to submission of a research proposal or while conducting the research, The faculty member should so inform ORSP, and ORSP should sign a non-disclosure agreement (NDA) with the company prior to the discussion.

--Following disclosure of IP to ORSP: Once the IP has been disclosed to ORSP by the faculty member, prior to the discussion, ORSP should sign a confidential disclosure agreement (CDA) with the company.

IP Protection ScenarioA company wants to sponsor research but first wants to

discuss the research with the faculty member. What should the researcher do next?

Set up a non-disclosure agreement (NDA) via ORSP. Discuss the research; submit proposal to company. ORSP negotiates the Cooperative Research and

Development Agreement (CRADA). Company wants to send materials to researcher.

Material Transfer Agreement (MTA) negotiated by ORSP. Company sends materials.

Conduct the research. An invention results. Submit invention disclosure to ORSP. ORSP evaluates disclosure, negotiates with company.

Perhaps another confidential disclosure agreement (CDA) and/or outgoing MTA needed.

Why is Confidentiality

Important?

--If a faculty member discloses confidential information to a company without a signed NDA/CDA in place, the company may use that information to file its own patent on the invention.

--Such public disclosures could result in loss of patent rights.

--In the U.S., you have one year to file a patent after public disclosure.

--In most other countries, except for Canada and Australia, loss of patent rights occurs upon public disclosure.

What Constitutes a Publication

or Public Disclosure?o A thesis or dissertation o A journal articleo A poster presentation or abstract, e.g., an on-line

abstract for a conference presentationo A published grant proposal, which is usually

considered public information once fundedo Proposals to commodity commissions sent out in booklet form or

via e-mail to commissions, whether or not funded

o A progress report submitted to a funding agency—USDA, NSF, etc.

o An oral presentation

What is an Invention Disclosure?

--Definition: A 4-page form to be completed by the faculty member, describing the invention

--The invention disclosure form is then signed by the faculty member (and any co-inventors), and sent to ORSP.

--The invention disclosure form can be found at the following web address:http://research.sfsu.edu/policylibrary/policylibrary.html

What is ORSP and What Happens

to Invention Disclosures Sent to

ORSP?

--ORSP is the SFSU office that collects and evaluates invention disclosures and creates a plan of action with the inventor for the disposition of the disclosed technology.

--ORSP first evaluates the IP, engages an attorney to look for prior art, and explores possible commercial interest in the technology. (Questions asked: Is the inventor working with a company interested in licensing the technology? Are other companies interested in licensing the technology?)

Evaluation of Invention

Disclosures

Factors to consider:Stage of dev’t of the technologyTechnical merit of the inventionCost of protection vs. commercial

worth of the technologyCost of dev’t and production of

invention vs. size of marketCommercial interestExisting patents/prior artOther factors: long-term value,

SFSU considerations

Next steps

--If there is market interest in the invention, ORSP may choose to patent or otherwise protect the invention. (This adds value to the potential license agreement because it allows the patent holder more control over the technology which the patent holder can give to the licensee of the technology.)

--Once license negotiations are underway, and a company is close to signing a license agreement—generally for up-front fees, milestone payments, royalties, etc., ORSP officially assigns the IP over to SFSU. The Procurement office will finalize and sign the license agreement.

--There are variations to the above theme: For example, a SFSU technology might be licensed to the SFSU inventor’s start-up company in exchange for minimal fees and/or an equity position in the company (this is rare, and is currently under study). Or, an existing company may want to create a start-up company around a SFSU technology for any combination of monetary or equity consideration.

--On the other hand, if an inventor’s technology proves unmarketable, it is either returned to the inventor or turned over to the federal agency that funded the invention.

SFSU will:• Work with the inventor and attorney to prosecute

the patent• Monitor the continued prosecution of the patent

(or other IP protection)• Once the patent is granted, pay appropriate issue

and maintenance fees• Monitor the fulfillment of license agreement terms• Do whatever else is required along the way

InventionFaculty

PatentingPatent Atty

Evaluationand

MarketingORSP

SFSU

LicensingORSP w atty

assignment

Inventiondisclosure

Licensing/Company Formation

SFSU

Invention Flow Chart

patentprosecution

What Else Does ORSP Do?--Sometimes ORSP gets involved in writing the IP

portions of large research proposal submissions, where significant technology transfer activities or IP is expected.

--ORSP handles incoming transfers of material under material transfer agreements (MTAs); also handles outgoing transfers of material, and prepares and signs outgoing MTAs. No commercial use of materials is allowed.

Distribution of License

Revenue

from Disclosed Technologies

• ORSP deducts unreimbursed patent expenses and then the rest is distributed as follows:o Inventor and SFSU split revenue 50:50.

General Contact

Information

For all SFSU employees:

--Tel: 415-338-7091--E-mail: jturkkan@sfswu.edu--Website: http://www.research.sfsu.edu